Application No.: 09/970,351
Docket No.: 49581/P030US/10104106
REMARKS
I. General
The issues outstanding in the instant application are as follows:
> Claims 4, 5, 16-21, 29-36, 47 and 48 stand withdrawn;
> Claims 1-3, 6, 7, 22, 24 and 25 stand rejected under 35 U.S.C. § 102(b) as
anticipated by "A Low Distortion PIN Diode Switch Using Surface Mount
Devices", Agilent Technologies, Application Note 1049, pages 1-10, 1999
(hereinafter the Agilent Reference)^
> Claims 8-15, and 28 are objected to as being dependent upon a rejected base
claim; and
> Claims 26, 27 and 37-46 are allowed.
Applicants would again like to express their appreciation for the indication of
allowability of claims 8-15 and 28 and allowance of claims 26, 27 and 37-46. However, in
light of the amendments presented above. Applicants hereby request reconsideration and
withdrawal of the outstanding rejections. Claims 1-22 and 24-53 are currently pending in this
application.
II. A pplicant's Record Under § 713.04 of Telephone Interview With Examiner
Applicants acknowledge receipt of the Examiner's Interview Summary for the
telephone interview of March 10, 2004. In supplement thereto. Applicants respectfully
submit the following record of the telephone interview of March 10, 2004, under M.P.E.P. §
713.04.
The following persons participated in the interview: Examiner Stephen E. Jones and
Apphcants' attorney Jerry L. Mahurin, Registration Number 34,661. Proposed amendments
to the claims, using claim 1 as an example, were discussed. Particularly, Applicants' attorney
proposed adding a limitation to claim 1 such as to indicate that at least one of the plurality of
diodes is disposed in a shunt configuration. The Examiner indicated agreement that this
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Application No.: 09/970,351
Docket No.: 49581/P030US/10104106
claim amendment distinguishes at least claim 1 over the art of record. However, the
Examiner indicated that such an amendment would require further searching and/or
examination. Thus, the above advanced amendments have been presented concurrently with
filing of a Request for Continued Examination (RCE).
III. Rejection(s) under 35 U.S.C. S102(b)
Claims 1-3, 6, 7, 22, 24 and 25 stand rejected under 35 U.S.C. § 102(b) as anticipated
by the Agilent Reference. Although as pointed out in the amendment filed July 15, 2003
Applicants believe these claims are allowable over the Agilent Reference^ Applicants have
amended independent claims 1 and 22 above. Independent claim 1 has been amended above
to include a limitation that recites "wherein at least one other of said diodes is disposed in a
shunt configuration." Similarly, claim 22 has been amended to recite that "at least one diode
of said plurality of diodes is a shunt diode with an anode coupled to said first control signal
input and wherein an anode of at least one other shunt diode of said plurality of diodes is
coupled to said second control signal input." Basis for these limitations exists in the
specification at least on page 9, line 21; page 11, lines 18 and 25; page 12, line 22; page 14,
line 7; and is shown in FIGURES 2, 2A, 3 and 4. Thus, no new matter has been entered.
The recited reference does not teach all claimed limitations.
It is well settled that to anticipate a claim, the reference must teach every element of
the claim, see M.P.E.P. §2131. Moreover, in order for a prior art reference to be anticipatory
under 35 U.S.C. § 102 with respect to a claim, "[t]he elements must be arranged as required
by the claim," see M.P.E.P. § 2131, citing re Bond, 15 U.S.P.Q.2d 1566 (Fed. Cir. 1990).
Furthermore, in order for a prior art reference to be anticipatory under 35 U.S.C. § 102 with
respect to a claim, "[t]he identical invention must be shown in as complete detail as is
contained in the . . . claim," see M.P.E.P. § 2131, citing Richardson v, Suzuki Motor Co., 9
U.S.P.Q.2d 1913 (Fed. Cir. 1989). Applicants respectfiilly assert that the rejection does not
satisfy at least these requirements.
As noted above, independent claim 1 , as amended, recites "wherein at least one other
of said diodes is disposed in a shunt configuration." Similarly, claim 22, as amended, recites
"at least one diode of said plurality of diodes is a shunt diode with an anode coupled to said
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Application No.: 09/970,351
Docket No.: 49581/P030US/10104106
first control signal input and wherein an anode of at least one other shunt diode of said
plurality of diodes is coupled to said second control signal input.". The Agilent Reference
does not disclose disposing diodes in a shunt configuration, therefore the Agilent Reference
does not teach the claimed shunt diode limitations now present in claims 1 and 22.
Therefore, Applicants respectfully assert that independent claims 1 and 22 are patentable over
the 35 U.S.C. §102 rejection of record. Furthermore, there are great differences between
these claims and the prior art of record, and a person of ordinary skill in the art considering
the prior art would not find these differences obvious.
Claims 2, 3, 6 and 7 ultimately depend from base independent claim 1 and claims 24
and 25 ultimately depend from base independent claim 22. Thus, each of claims 2, 3, 6, 7, 24
and 25 inherit all limitations of their respective base claims. Therefore, each of claims 2, 3,
6, 7, 24 and 25 set forth features and Umitations not recited by the Agilent Reference. Thus,
Applicants respectfully assert that, at least for the reasons advanced above in answering the
rejections of independent base claims 1 and 22, claims 2, 3, 6, 7, 24 and 25 are patentable
over the 35 U.S.C. §102 rejection of record.
rV. Claims indicated as allowable
The Final Action indicates that claims 8-15 and 28 contain patentable subject matter.
Accordingly, claims 8, 13 and 28 have been amended above to place them in independent
form. Claim 8 retains all of its priginal limitations. Claims 13 and 28 retain limitations
believed to place these claims in condition for allowance. Therefore, Applicants respectfully
request an indication of allowance of claims 8, 13 and 28.
New claims 49-51 include limitations removed fi*om claim 13. Similarly, new claim
52 includes limitations removed fi:*om claim 28. New claim 53 contains limitations
corresponding to limitations recited in other dependent claims, such as dependent claim 30,
but claim 53 depends from now independent claim 28. Whereas, new claims 49-51 depend
fi-om now independent claim 13, and new claims 52 and 53 depend from now independent
claim 28, claims 49-53 include all limitations of respective claims 13 and 28. Therefore, each
of claims 49-53 are patentable. Resultantly, Applicants respectfully request an indication of
allowance of new claims 49-53.
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Application No.: 09/970,351
Docket No.: 49581/P030US/10104106
V. Conclusion
In view of the above, each of the presently pending claims in this application is
believed to be in immediate condition for allowance. Accordingly, the Examiner is
respectfully requested to pass this application to issue.
Fees related to the above advanced claim amendments are dealt with in the
accompanying Transmittal(s). Similarly, the Fee associated with the accompanying RCE are
dealt with in the accompanying Transmittal(s). Applicant believes no further fee is due with
this response. However, if an additional fee is due, please charge Deposit Account No. 06-
2380, under Order No. 49581/P030US/10104106 from which the undersigned is authorized
The examiner is respectfully requested to call the below listed attorney if he can be of
assistance in furthering prosecution of the present application.
to draw.
Dated: April 13,2004
Respectfully submitted.
Jerry L. Mahurin
Registration No.: 34,661
FULBRIGHT & JAWORSKI L.L.P.
2200 Ross Avenue, Suite 2800
Dallas, Texas 75201-2784
(214) 855-8386
(214) 855-8200 (Fax)
Attomey for Applicant
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